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JT 333 
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PvliCIPROCITY 



l.\ TvESI^ECT TO 



PATENTS AND PATENT RIGHTS 



A SCHEME FOR THE CONSIDERATION OF THE INTERNATIONAL 
AMERICAN CONORESS. 



Bv F. A. sti:j:i.y 



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N 5 1909 
0. OT 0- 



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RECIPROCITY IN RESPECT TO PATENTS AND PATENT 

RIGHTS. 



A SCHEME FOR THE CONSIDERATION OF THE INTERNA- 
TIONAL AMERICAN CONGRESS. 

By F. a. Seely. 

In formulating terms for reciprocity between the American 
nations, with respect to patents for inventions, it is observed, 
first of all, that no scheme can be framed which will be more 
liberal towards foreigners than the existing law of the United 
States. That law places them in all respects on the same foot- 
ing as our own citizens, both in regard to the conditions on 
which letters patent are granted and those under which patent 
rights are subsequently upheld by the courts. This liberality 
towards foreigners is, indeed, characteristic of the laws of the 
American nations generally. They grant their patents to cit- 
izens and aliens alike, and upon the same terms. This is done 
by statute, and hence there is little need of treaty stipulations 
to establish reciprocity in this particular. 

But the conditions under which the validity of a patent in 
some American countries may be vitiated after the grant bear 
somewhat hard on the foreigner if, as is natural, he happen to 
have first secured a patent in his own country. In no case is the 
patent granted without the presumption of novelty and that 
the applicant is the true inventor 5 but in none of the Ameri- 
can countries are the same pains taken as in the United States 
to determine positively that the invention for which the pat- 
ent is asked is the invention of the applicant, and that the pat- 
ent shall be granted only for that which, by rigid examination 
into the art to which the invention appertains, has been deter- 
mined to be actually novel. In tbe United States the grant is 
conditioned on these, an oath being required of the applicant 
that he verily believes himself to be the original and first in- 
ventor of that which he seeks to protect by patent, and his 
142a 1 



claims to inventiou being closely defined and submitted to the 
severest scrutiny of a body of trained examiners. 

These features of our system are the result of its develop- 
ment for a century. They involve an abrupt departure from 
the system of granting patents which prevails in Europe, and, 
since their adoption by Canada, have become known as the 
American system. Under it a patent goes forth with a prac- 
tical guaranty of the novelty of the invention. It may be 
vitiated, but only by the discovery of new evidence against 
novelty, or by the discovery that, notwithstanding his oath, 
the applicant was not the true and first inventor. 

Another feature of the United States patent system is that 
the patent, once granted, is subject to no subsequent condi- 
tions to keep it in force for its full terra. The Constitution of 
the United States recognizes that invention is to be encour- 
aged for the promotion of the useful arts, and that the way to 
encourage it is by securing to the inventor the benefit of his 
invention for a limited time. Under this doctrine a United 
States patent is not in spirit a grant from the sovereign, but 
is a contract between the sovereign and the inventor, whereby 
in consideration of the protection given him for a term of years 
he agrees to give to the public the full benefit of his invention 
at the expiration of that term. This is the sole consideration, 
and as it was regarded just in theory, so it has been found ex- 
pedient in practice. Hence the issue of a patent is accompa- 
nied by no imposition of annual or other dues, no obligation 
to work the invention, no binding or harassing conditions 
whatever. The sole pecuniary benefit derived by the Govern- 
ment is in the fees paid in to the Patent Office with the appli- 
cation, which are the estimated reasonable compensation for 
the actual work done by the office for the patentee. 

It is to be particularly noticed that under the United States 
patent law prior public use of an invention in a foreign coun- 
try is not a bar to the grant of the patent. Kor is the fact 
that the invention has been previously patented in a foreign 
country a bar to the grant to the inventor if applied for during 
the life of his foreign patent. Even the fact that the inven- 
tion has been known and used in this country will not bar the 
grant if the application for patent is made within two years 
from the beginning of public use. Everything in the law favors 
the inventor who introduces his invention to the people of the 
United States. He may have patented it first abroad, be may 



have suffered it to become known and used abroad without 
protecting it by patent, he may have tested it experimentally 
and publicly and commercially here for full two years, but 
none of these stand in the way of the completest protection 
the law aftbrds. AH this, too, has been considered wise in prin- 
ciple, and the results have demonstrated its expediency. 

It seems almost like excessive liberality to grant such privi- 
leges to foreigners as these statements indicate, but the United 
States patent law knows no foreigners — citizens and aliens are 
on the same footing. And he who can promote the useful arts 
in the United States by introducing a valuable and novel in- 
vention, being himself the inventor, is entitled under the Con- 
stitution and statutes to protection iu its enjoyment. 

A single restriction, which has sometimes been regarded as 
a discrimination against the alien, exists in the patent laws of 
the United States. It is that provision of the statute whereby 
the term of a patent for an invention which has been previ- 
ously patented abroad is made to expire with the expiration of 
the foreign patent, or, if there be more than one, with the term 
of that having the shortest time to run. This, however, is not 
in lact a discrimination against the foreigner, since it applies 
equally to the citizen, and has been made effective by the courts 
to terminate the patent rights of citizens. It amounts to the 
claim by the United States, on behalf of her own people, that 
the invention shall become the property of the public here 
when permitted to become so elsewhere. This is undoubtedly 
just in theory, and the same provision is found in the patent 
laws of nearly every American nation. In practice, there are 
reasons to doubt its expediency, and the repeal of this pro- 
vision of law has often been urged. 

Another provision of our patent law to be considered in this 
relation is that relating to publication. Publication of some 
kind is a feature in the patent law of every country. In some 
it takes place immediately on the application and before the 
grant. In others it does not take place until the expiration 
of the term of the patent. In the United States publication 
is simultaneous with the grant, everything relating to the in- 
vention being kept secret in the Patent Office until that event. 
This i)ublication is real and thorough. Printed copies of the 
specification and drawings are exposed for sale. They are 
furnished to the libraries of the States and of the United 
States district courts ; they are distributed to foreign govern- 



mcDts under a system of exchange, while the original record 
of the case, and all proceedings in the Patent Office concerning 
it, may be inspected by any one. This complete disclosure to 
the public is in conformity with the terms of the contract, and 
is in the interest both of the public and the inventor, serving 
to define to all concerned the metes and bounds of his privi- 
lege, to avoid unintentional trespass, and to inform the pub- 
lic with great exactness of the rights to which they are ulti- 
mately to succeed. Such disclosure stimulates other invent- 
ors, and many a crude and unprofitable invention has under 
this system become the parent of vast industries. 

What has been said indicates sufficiently the favor extended 
by the patent laws of the United States to the foreign in- 
ventor. Be he the inventor, or in good faith believing himself 
to be so, he comes to the Patent Office in every respect on the 
same footing as a citizen, fle is not required to first obtain 
protection at home, and no special fees or exactions are im- 
posed on him. Like the citizen, he ma3^ work his patented in- 
vention or not, as he pleases, since the only obligation he incurs 
is that of giving it to the public at the expiration of its term. 
In the courts he may bring suit for infringement, and will find 
in these tribunals that an alien friend is entitled to, and will 
receive, the same protection in his rights as a citizen. And all 
this is irrespective of treaties; it is the simple result of the 
law. 

In proposing terms of reciprocity in respect to patents, it is 
not possible for the United States to propose anything less 
liberal than her own law. She can not ask of the other powers 
any terms under which they shall not give to her citizens what, 
without a treaty, and b3^ her own statute, she gives freely to 
theirs. With this view, and to a(Jai)t the propositions of the 
United States for the intelligent and orderly consideration of 
the Congress, the following scheme is presented in the form of 
articles: 

Article I. 

Subjects or c.itizcMis of e;ich of the contracting states shall 
enjoy in all the other states, in respect to patents for invention, 
all the riglits their n-spt^ctive subjects or citizens now posvsess 
or may herealter possess. They shall have the same protection 
and the same legal leconrse against all infriuiiements of their 
rights, subject to the formalities and conditions imposed by 



the domestic legislation of each state upou its owu subjects or 
citizens. 

Article II. 

Persons who are permanently domiciled or have industrial 
establishments in any one of the contracting states shall, in 
respect to the rights guarantied by the above article, be re- 
garded as citizens of that state. 

Article III. 

Any person, being a citizen or subject of one of the contract- 
ing states, who has made an invention in the useful arts, may 
be granted a patent for ihe same in any other contracting state 
in the same manner and under the same conditions as if he were 
a citizen thereof. 

Article IV. 

A patent shall not be refused to any person applying for the 
same in any contracting state, nor, when granted, shall it be 
vitiated by reason of his having first obtained a patent in his 
own country, or in any other of the contracting states, nor by 
reason of the publication of the specification of such patent in 
accordance with the laws of such state, provided the invention 
has not been introduced into public use in the country in 
which application is made for more than two years prior to 
such application. 

Article V. 

Nothing in these articles shall be construed as interfering 
with the right of any of the contracting states to make the 
duration of a patent terminate witn the expiration of the term 
of a prior foreign patent for the same invention, nor as absolv- 
ing the patentee from any obligations imposed upon him by 
the laws of any country in which he seeks protection. 

Article VI. 

Contests and disputes regarding the rights of patentees shall 
be settled by the appropriate tribunals of the respective states, 
and shall in no case become the subject of diplomatic inter- 
vention. 

Articles I and II are substantially in the words of the con- 
vention for the protection of industrial property signed at 



Paris in 1883, and to which, along with many of the nations of 
Europe, several of those of America are parties. It is not 
known that any objection can arise to them, and they need no 
explanation. 

Article III defines more clearly the nature of the reciprocity 
desired. It is not believed to be at variance with the existing 
law of any American state. 

Article TV is in accordance with the law of the United States. 
It is more liberal than most of the Spanish American patent 
laws, since under them a patent may be vitiated after the 
grant if it is found that the invention had prior to application 
been so fully published as to make it possible to put it in prac- 
tice. The laws of most European countries are similar in this 
respect, and the hardship they impose on the inventor is one 
that treaty stipulations have more than once sought to remove, 
by admitting of a term, during which, after publication of his 
invention according to the patent laws of one country, the in- 
ventor may deposit his application in another without preju- 
dice by reason of the prior publication. The inventor en- 
counters no such difficulty here. His prior patent may abridge 
the term of a patent in the United States, but neither the ex- 
istence of such patent nor any publication under it can viti- 
ate that granted to him by this Government. 

The only ground on which the true inventor can be refused 
a patent in this country is that of public use or sale for two 
years in this country prior to the application. This applies alike 
to citizen and alien, to either of whom the law allows this liberal 
term in which he may not only test the operativeness of his in- 
vention, but, if he choose, its commercial value. There is no 
magical character in the term of two years, but it is in our patent 
system the term which has been established as the limit of de- 
lay. Thus, failure to apply for patent within two years after 
public use of the invention will cause the patent to be refused. 
Failure to complete an application within two years from filing 
a petition works abandonment; so does a failure to prosecute 
the case within two years after an action by the office. Fail- 
ure to take out the patent within two years after allowance 
also works abandonment. And now the courts are inclined to 
hold that if the patent when granted is void, through error 
which may be cured by a re issue, thu application for re-issue 
must, under ordinary circumstances, be filed within two years 
from the original grant; otherwise it will be void. 



This term^ dictated by do special reasons, is found expedient 
in practice, and, so far as relates to the period of public use 
which shall constitute a bar to a patent to the true inventor, it 
is urged for adoption by the other American nations. It has 
already been incorporated into the patent law of Venezuela. 
It is an encouragement to the inventor, since it enables him 
before applying for a patent to ascertain experimentally the 
commercial adaptation of his invention f6r any particular coun- 
try, and it is in no respect disadvantageous to the public of 
that country. 

Article V scarcely needs explanation. It simply expresses 
acquiescence in the domestic laws of each country, and practi- 
cally is a repetition in more specific terms of a part of Article I. 

Article Yl is in accordance with the existing statute of some 
South American states. No occasion for such a statute has 
been found in the United States. Diplomatic intervention in 
matters of this character is not likely to occur, but if attempted 
would meet with scant favor. The existence of such a law in 
several states indicates that the need of it has been felt, and 
the United States will not hesitate to pronounce herself in full 
accord with the public policy that has led to its enactment. 



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